"At Least One Of" Revisited: Arguing SuperGuide as a Basis for Patent Validity
"At Least One Of" Revisited: Arguing SuperGuide as a Basis for Patent Validity

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and C.”

Since 2004, the SuperGuide principle has been prevalent in patent cases where claim phrases similar to “at least one of are construed.  For example, the U.S. Patent Trial and Appeal Board (PTAB) recently relied on SuperGuide in March 2023 to determine the meaning of “one or more of” as being equivalent to “at least one of” in evaluating the plain meaning of the claim language “one or more of A and B.”  Ex parte Sharman, 2022-003418 (PTAB Mar. 1, 2023).  

In SuperGuide, the Federal Circuit held that the plain meaning of “at least one of A, B, and C” means: at least one A, at least one of B and at least one of C.  The Court held that if the applicant intended “at least one of A, B, and C” to mean A, B or C, they should have used “OR.”

The Court declined to support plaintiff SuperGuide’s construction of the asserted claims of U.S. Patent No. 5,083,211 and concluded that the plain and ordinary meaning of the claims favored defendant DirectTV’s narrower interpretation.  An exemplary portion of the disputed language of claim 1 of the ‘211 patent is shown below:

Claim 1: An online television program schedule system comprising:

first means for storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type; …

A key question concerned what the term “at least one of” modifies. Plaintiff SuperGuide asserted that the language broadly requires the selection and storage of one or more of the four criteria listed and does not require storing all four criteria.  However, the Federal Circuit noted that DirecTV correctly argued that the phrase “at least one of” modifies each category in the criteria list.  Hence, the claim phrase “at least one of A, B, and C” has a narrower meaning: at least one A, at least of B and at least one of C.

Recent Federal Circuit jurisprudence also illustrates the significance of SuperGuide in the semantics of claim drafting and its implications in infringement suits.  In the 2021 SIMO Holdings, Inc. Opinion, the Court analyzed claim 8 of plaintiff Simo Holdings Inc.’s U.S. Patent No. 9,736,689.”  SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367 (Fed. Cir. 2021).  Notably, the Court emphasized that “the [SuperGuide] principle has particular force when the term joining the items in a series is ‘and.’”  SIMO Holdings, Inc., 983 F.3d at 1377.  Claim 8 of the ‘689 patent at issue is in SIMO Holdings is shown below:

Claim 8: A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors for: …

A central point of the SIMO Holdings infringement dispute concerned whether claim 8 requires the element of a non-local calls database.  In overturning the district court’s claim interpretation, the Federal Circuit noted that the SuperGuide principle supported defendant uCloudlink’s narrower reading of “a plurality of” as applying to each item in the list.  Hence, a “non-local calls database” was indeed a required claim element in the series, therefore narrowing the claim scope in defendant’s favor.

For Patent Prosecutors
In view of SuperGuide and its progeny, it is well-advised to provide adequate support for the desired claim scope in the specification and to give thoughtful consideration to the implications of using the terms “and” and “or” when selecting a claim term joining items in a series.

For Petitioners in IPR Proceedings
In an Inter Partes Review (IPR), it is the burden of the Petitioner to demonstrate that each and every element recited in the challenged claims are taught by the reference or proposed combination of references.  Under SuperGuide, it is important for the Petitioner to pay careful attention to whether “and” or “or” is used to join a list of elements that follow phrases such as “at least one of” and “one or more.”  

For example, if the challenged claims recite “at least one of A, B and C”, the Petition should rely on prior art that teaches A, prior art that teaches B, AND prior art that teaches C in order to establish that the claim is unpatentable.

However, if the challenged claims recite “one or more of A, B, or C”, the Petition may rely on prior art that teaches A OR B OR C.

As a result, when “OR” is utilized in the series, the Petition can address only one of the elements in the list.  Whereas, in the case where “AND” is utilized, the Petition should address every element in the list.

For Patent Owners in IPR Proceedings
SuperGuide provides a potential tool for Patent Owners to obtain favorable decisions in IPR proceedings by identifying a Petition’s failure to show prior art that teaches all elements of a challenged claim.  For example, if the claim recites “at least one of A, B, and C” and the Petition only alleges that the prior art teaches A, then the Patent Owner can argue that the Petition fails to show prior art that teaches required elements B and C of the challenged claim.

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